Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 15-16 and 18-19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Schuster et al. (U.S Pub. No. 20230033877).
Regarding claim 15, Schuster discloses a filtering mouthpiece capable of being adapted for preassembling with a pre-roll body via an airtight seal, the mouthpiece comprising:
an open mouthpiece end (108, fig. 5) disposed opposite to an attachment end (124, fig. 5), and a passage (116, fig. 5) providing fluid communication between the open mouthpiece end and one or more filtration holes disposed through the attachment end [0041],
wherein the one or more filtration holes are sized during manufacturing [0038] of the filtering mouthpiece capable of filtering particulate having a predetermined average maximum particle dimension, and wherein a total cross-section area of the one or more filtration holes modulates draw resistance for a user [0040]. Since Schuster discloses proximal opening dimension in [0040], the opening is capable of performing the intended use of filtering particulate having a predetermined average maximum particle dimension [0049]; further the total cross-section area of the one or more filtration holes also performs the intended use of modulating draw resistance for a user (Abstract).
Regarding claim 16, Schuster discloses wherein the filtering mouthpiece is manufactured from a ceramic material by injection or compression molding [0038]. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695,698, 227 USPQ 964, 966 (Fed. Cir. 1985), (MPEP 2113). In this case Schuster discloses common processes such as injection and molding for materials such as plastics and fibers respectively; the claimed filtering mouthpiece is the same as or obvious from the disclosed ceramic filtering mouthpiece of Schuster.
Regarding claim 18, Schuster discloses a preferred embodiment wherein each of the one or more filtration holes has a maximum cross-sectional dimension of 0.04 inches (1.016 mm) within the claimed range from about 0.5 mm to about 1.5 mm.
Regarding claim 19, Schuster discloses the filtering mouthpiece tapers from the attachment end toward the open mouthpiece end ([0038-0040] and fig. 5).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schuster et al. (U.S Pub. No. 20230033877).
Regarding claim 21, Schuster discloses a cross-sectional area of the one or more filtration holes is 0.8107 mm² (based on 0.04 inches in diameter) and at least four filtration holes [0049]. Schuster discloses the combination of the cross-sectional area of individual hole in the preferred embodiment and the range of the number of filtration holes produces the range of the total cross-sectional area of the one or more filtration holes wherein this range is overlapping with the claimed range of about 5 mm² to about 15 mm²; in case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the claimed range.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schuster et al. (U.S Pub. No. 20230033877) in view of Sutton et al. (GB2511305A).
Regarding claim 20, Schuster does not expressly disclose the filtering mouthpiece comprising a ring of flexible material. Sutton discloses a filtering mouthpiece comprising a ring of flexible material (34, fig. 2) having an adhesive on a surface thereof, wherein the ring of flexible material is adhered around a side surface of the filtering mouthpiece proximate to the attachment end to form an airtight seal therewith and is capable of being wrapped around and adhered to a side surface of the pre-roll body proximate to an end of the pre-roll body to form an airtight seal therewith (page 9). Sutton does not expressly discloses the material of the 0-ring; however it would have been obvious to one of ordinary skill in the art at the time the invention was made to select the O-ring material such as vinyl, polypropylene (PP), and polyethylene (PE).
Response to Arguments
Applicant's arguments filed 6/15/2026 have been fully considered but they are not persuasive.
Applicant essentially argues that while Schuster discloses customizable holes for regulating airflow, Schuster does not teach or suggest the specific claimed relationship in which: individual filtration holes are sized based on a predetermined average maximum particle dimension of particulate to be filtered, and the total cross-sectional area of the filtration holes modulates draw resistance. This argument is not persuasive because Schuster discloses the filtration holes having size within the claimed range, therefore the individual filtration holes of Schuster are sized the same as the claimed invention that are based on a predetermined average maximum particle dimension of particulate to be filtered. Furthermore, as explained above, Schuster discloses the total cross-section area of the one or more filtration holes also performs the intended use of modulating draw resistance for a user (Abstract). Additionally Schuster discloses the combination of the cross-sectional area of individual hole in the preferred embodiment and the range of the number of filtration holes produces the range of the total cross-sectional area of the one or more filtration holes wherein this range is overlapping with the claimed range of about 5 mm² to about 15 mm²; in case of overlapping ranges, it would have been obvious to one of ordinary skill in the art at the time the invention was made to pick the claimed range.
Applicant further essentially argues that the secondary prior arts do not cure the alleged deficiencies of Schuster. This argument is not persuasive because, as explained above, Schuster teaches/suggests the size of the individual filtration holes and the total cross-section area of the filtration holes.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHU H NGUYEN whose telephone number is (571)272-5931. The examiner can normally be reached M-F 9-5.
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/PHU H NGUYEN/Examiner, Art Unit 1747
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